Big boost for site search/pop-up ad key words

A robust Court of Appeal judgement has given Reed Business’s TotalJobs.com the green light for use of Reed Employment’s REED brand in site/pop-up ad links. Why? Because “significant deception” was not proven.

In the latest round of the five year long battle of the “Reeds,” magazine publishers Reed Business Information (“Reed Business”) won an injury time appeal victory against employment agency group Reed Executive (“Reed Employment”).

In 1986 Reed Employment registered REED as a trademark for employment agency services.

In 1996 it began advertising job vacancies on its website.

Reed Business published various journals, including many which catered to specialist industry sectors and carried job advertisements. Despite this, the parties appeared to peacefully coexist until 1999, when Reed Business piloted its own, jobs related website called TotalJobs.com.

Reed Employment sued for trademark infringement and passing off. At first instance, Reed Employment was victorious on all counts, but before the Court of Appeal in March 2004 the outcome was very different on the issues that were still live at that point.

Secondly, there was the use of the word “REED” as a trigger for a banner advertisement which Reed Business had paid for through Yahoo! If the word “REED” was keyed in by the searcher a banner advertisement for the Total Jobs website appeared.

Thirdly, the TotalJobs website used “Reed Business Information” as a meta tag in several versions of its website so that a searcher who keyed those words in would see TotalJobs listed in the search results.

Test for infringement

The principal issue to decide was what test to apply to determine whether a trademark infringement had occurred.

This was crucial. Reed Employment would not have to show the existence of any confusion or any likelihood of confusion if it could persuade the Court that Reed Business was (1) using exactly the same trademark as Reed Business had registered in 1986 (i.e. REED), regardless of whether it added other words at the front or back of it, in for example Reed Business Information Limited, and (2) the services in connection with which Reed Business was using the REED brand were exactly the same as the “employment agency services” for which Reed Business registered REED in 1986.

On both counts the appeal judges threw out the Reed Employment claim.

Marks “identical”?

On whether the marks were “identical,” the appeal judges felt that the criterion of identity had to be interpreted strictly. This meant there could be no “identical” use if the defendant was using branding which incorporated the claimant’s registered trademark but there were other materials such as additional words, logos or artwork.

Services the same?

The Court of Appeal also held that the services being offered by Reed Business under the “REED” mark were not identical to “employment agency services”. In this connection the judges felt that it was necessary to “identify the core activities that made a service provider an employment agency”. Reed Business was not providing an agency service, only a service publishing job advertisements. Accordingly, there was no identity of services.

Confusion needed

As a result of these findings, Reed Employment would only have a chance of success in its trademark infringement claim if it could show a likelihood of confusion. Even if it were able to establish this, then Reed Business would have another defence up its sleeve. This would be the defence under Section 11 of the 1994 Trade Marks Act based on use of one’s “own name”. This defence would fall away, however, if it could be shown that Reed Business’s use of the “REED” brand was contrary to honest practices in industrial or commercial matters, so the Court focused on this issue also.

This was also relevant to the separate claim of passing off. A passing off claim will only succeed if it can be shown that there is some form of “misrepresentation” leading to actual or likely confusion, and the case law shows that if the defendant is genuinely using its own name, then it will not be enough to establish a small likelihood of minimal confusion; there must be significant actual deception.

So as with the trade mark infringement claim, it was crucial for Reed Employment to establish major deception to get a result.

The appeal judges then went on to deal with the three principal types of use that were still live in the case:-

Copyright notice

Applying the test requiring material/significant confusion/deception, the judges found insufficient evidence to justify a finding that such deception arose from this notice alone. They threw out the infringement case on this count.

Banner advertisements

The first instance judge held that using the word “REED” to trigger an advertisement for Reed Business’ TotalJobs.com website was a trademark infringement. The appeal judges disagreed. Again applying the “actual significant deception” test, Lord Justice Jacob found it “fanciful” to imagine that the triggering of a TotalJobs.com banner ad by the keying in of the word “REED” could make anyone think there was a trade connection between the TotalJobs.com website and Reed Employment.

Reed Business Information “meta tags”

The first instance court held that this use constituted passing off and trademark infringement. Lord Justice Jacob disagreed. Applying a similar reasoning to that used in relation to the banner ad issue above, he found no likelihood of confusion, commenting that causing a site to appear in a search result, without warning, does not suggest any connection with anyone else.

So on all these issues Reed Business prevailed.

Why this matters:

This is a significant development in the growing body of jurisprudence relating to uses of links and metatags on the net to trigger digital advertising and particular website search results.

As ever, the case turned on its own facts, particularly on the fact that the Reed Business brand was not identical to the brand registered by Reed Employment. Where the marks are identical then a link is more likely to be held to be a trademark infringement. If this is not the case however, a claimant complaining about use of links by a competitor has to fall back on passing off or “secondary” trademark infringement, where likelihood of confusion has to be shown. Here, this judgement makes it clear that a low level of likely confusion will not be enough. There will have to be material, significant deception caused by use of the link. Indeed deception of an order very similar to that which the Courts now require if a registered trademark owner is going to be able to stop a competitor using its registered brand in comparative advertising.